Gene Yao Esq.

Barnes and Thornburg LLP


Gene Yao is of counsel to Barnes and Thornburg LLP, Wilmington, Del. With a life sciences practice encompassing all aspects of intellectual property law, including domestic and international patent preparation and prosecution, patent enforcement, counseling, opinion rendering, due diligence, post-grant patent practice, intellectual property licensing, patent portfolio management and litigation, Gene is equipped to handle a broad range of client needs. He is registered to practice before the US Patent and Trademark Office. His scientific background in the areas of biochemistry, chemistry and molecular biology and his work experience in the biotech and pharmaceutical industries allow him to provide valuable insight into  life sciences intellectual property law.

Gene has extensive experience providing counseling to and preparing and prosecuting patent applications for biotech, chemical and pharmaceutical companies. Specific technological areas in which he has experience include small and large molecules, pharmaceuticals, genomics, proteomics, therapeutic antibodies, therapeutic biologics, gene therapies, recombinant DNA, antimicrobial therapies, immunoassays, formulations, pharmaceutical compounding, transgenic animals, diagnostics, personalized health care, medical devices, fertilizers, polymers, cleaning materials and cosmetics. He has also counseled extensively on patent matters related to the Orange Book, drug product exclusivities, investigational new drug applications (IND), new drug applications (NDA) and abbreviated new drug applications (ANDA), safe harbor, biosimilars, life-cycle management, target clearance and Hatch-Waxman issues. In addition, he has comprehensive experience in patent portfolio management and license and agreement work.

Prior to joining Hunton & Williams LLP, Gene served as senior counsel at Roche Pharmaceuticals where he was the primary US patent attorney in the metabolic and cardiovascular diseases and disorders therapeutic areas and also counseled in the oncology and central nervous system therapeutic areas. He was also involved in various litigation matters and served on the company’s patent quality and standards committee.

Before working for Roche, Gene served as an associate in the patent boutique practice of Synnestvedt & Lechner LLP, where he was responsible for counseling on patent, license and agreement matters, and for preparing and prosecuting patent applications in the fields of the biotech, chemical and pharmaceutical arts. He also served as the firm’s foreign and PCT patent expert.


Relevant Experience

  • Patent Preparation and Prosecution: Prepared and prosecuted patent applications in various fields, with a focus on the biotech, chemical and pharmaceutical arts.
  • Opinion Work: Prepared various opinions, including freedom to operate, infringement, patentability, target clearance and validity opinions.
  • Mergers and Acquisitions and Due Diligence: Served as intellectual property counsel on various mergers and acquisitions and related due diligence projects.
  • Post-grant Patent Practice: Prepared various inter partes review requests.
  • Litigation: Provided technical and analytical support in various intellectual property litigation matters, deposition preparation, worked with trial experts, managed discovery, conducted legal research.
  • License and Agreement Work: Negotiated, prepared and counseled on various agreements relating to intellectual property, including license agreements, joint development agreements, research agreements, confidentiality agreements and CRADAs.
  • Patent Portfolio Management: Managed domestic and international patent portfolios, including the development of strategies to maximize the exclusivity of portfolio products.